A time to appeal
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
5d ago
If you are reading this blog post you already know how complex patent prosecution strategy can be. There is immense pressure to move an application through to issuance with the minimum number of office actions (and RCEs), but with the broadest scope and without making any admissions. At the same time, you have to distinguish the state of the art and protect product sales in the marketplace by dissuading competitors from challenging the patent or designing around. And you have to do all of this with ever increasing downward pressure on costs because patent prosecution is often seen as a commodi ..read more
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Quality Assurance Specialists In the Appeal Process
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3w ago
During patent prosecution at the USPTO, when an applicant is unsatisfied with rejections from an examiner (and claims are either twice rejected or under final rejection), the applicant can appeal to the Board (PTAB).  The appeal requires filing a notice of appeal, along with an appeal brief.  However, after filing the appeal brief, the case is still with the examiner and, if the examiner is going to continue to stand by the current rejections, an appeal conference is held.  As explained by MPEP § 1207.01: An “appeal conference is mandatory in all cases in which an acceptable br ..read more
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To emphasize or not - that is the question
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
When drafting persuasive papers, such as responses to Office actions or appeal briefs, the applicant is relying on the written word to get their point across. While pictures and diagrams are a great way to supplement written arguments, there is always a question about when and how, if at all, to use emphasis (bold, underlined, all caps, italics, etc.). This post does not attempt to answer these complex questions, but rather points out a potential pitfall in using emphasis in patent prosecution arguments. In particular, using emphasized language on a point that is open to attack can cause the e ..read more
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Substantially is Substantially OK in Patent Claims
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
Many examiners will raise issues with claims that include a term of approximation, like “substantially.” While one may elect to shorten prosecution and simply remove the term in some instances, there can be situations where it is critical to retain some flexibility in the claim scope so as to avoid easy design around options. MPEP §2173.05(b) specifically addresses this issue and can provide helpful support for applicants wanting to retain some flexibility in claim scope. The MPEP explains in Section III how approximation terms are to be reviewed, and specifically addresses “substantially ..read more
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Implicit Motivation to Combine
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
The law of obviousness has many facets. One is the teaching, suggestion, or motivation (TSM) test that can be used to evaluate the propriety of a prior art combination. The TSM test asks whether there is a teaching, suggestion or motivation to combine prior art references. If so, the invention is obvious (assuming the combination then teaches all of the claimed elements). The TSM test has even weathered Supreme Court scrutiny in KSR, where the Court rejected a rigid application of the TSM test, yet affirmed that the TSM test captures a helpful insight. Most of the time the TSM inquiry focuses ..read more
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Appeal Brief Rules - Who Enforces?
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
Our last post (here) provided an example where the examiner failed to follow the appeal brief rules. Now the shoe is on the other foot - the applicant is being accused of improper appeal brief format. But whose job is it at the USPTO to ensure compliance with the appeal brief rules? Can the examiner object to the form of the brief? In Hamilton Sundstrand’s recent appeal (Appeal 2022-002494, Application 15/640,137), they dealt with precisely this issue. After filing an appeal brief that was accepted by the Patent Appeals Center, the examiner (and supervisor and RQAS “appeals specialist” spent a ..read more
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Double Standards at the USPTO
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
Everyone (reading this blog) likely has ideas about fundamental fairness in legal proceedings. Each side should follow the same rules, each side should have an opportunity to be heard, etc. These are not controversial. In administrative proceedings, there are additional requirements because one party (the government) has essentially unlimited resources and extreme power. Even considering a mega corporation, there is no party that can compare to the government. Additional requirements for the government in administrative proceedings at the USPTO are set out by the Administrative Procedure Act ..read more
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The Sneaky Printed Matter Doctrine
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
The printed matter doctrine can present problems in prosecution for various technologies, including GUIs, consumer products, etc. The doctrine The doctrine typically is applied to text or numbers or other visual aspects meant to convey information, but do not be fooled into thinking the USPTO will stop there. A recent case on footwear shows that the USPTO can extend the doctrine even to other visual indicators, such as lights. The case is Appeal 2022-002834, Application 16/132,665. The invention relates to an indicator for a heated article of footwear. The heating system is integrated in an in ..read more
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The "complexities" of patent law
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
See how you do against the USPTO. Can you correctly identify the ends of the cable (it is a single cable 3)? This is “complex” stuff. And this is what patent professionals have to deal with every day - arguing with a government representative whether their interpretation is reasonable. To help, here are some definitions from the dictionary (Merriam Websters): 1a : the part of an area that lies at the boundary b(1) : a point that marks the extent of something (2) : the point where something ceases to exist world without end c : the extreme or last part lengthwise : tip d : the terminal unit of ..read more
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Consistency in Patent Prosecution
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
There are many issues for patent prosecution professionals to keep top of mind in their work… the invention, the potential competitors, the design arounds, the prior art, the business strategy, admissions, claim scope, costs, case law, patent office procedures, restrictions, … the list goes on. While some think patent prosecution is a commodity that can be bid out, like getting quotes to fix a dent on your car, the reality is so much more complex. In patent prosecution, just one little oversight can be the line that divides success from failure. The difference in outcomes due to missing one of ..read more
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